Skip to main content

Full text of "USPTO Patents Application 09970351"

See other formats


Application No.: 09/970,351 



Docket No.: 49581/P030US/10104106 



REMARKS 

I. General 

The issues outstanding in the instant application are as follows: 

> Claims 4, 5, 16-21, 29-36, 47 and 48 stand withdrawn; 

> Claims 1-3, 6, 7, 22, 24 and 25 stand rejected under 35 U.S.C. § 102(b) as 
anticipated by "A Low Distortion PIN Diode Switch Using Surface Mount 
Devices", Agilent Technologies, Application Note 1049, pages 1-10, 1999 
(hereinafter the Agilent Reference)^ 

> Claims 8-15, and 28 are objected to as being dependent upon a rejected base 
claim; and 

> Claims 26, 27 and 37-46 are allowed. 

Applicants would again like to express their appreciation for the indication of 
allowability of claims 8-15 and 28 and allowance of claims 26, 27 and 37-46. However, in 
light of the amendments presented above. Applicants hereby request reconsideration and 
withdrawal of the outstanding rejections. Claims 1-22 and 24-53 are currently pending in this 
application. 

II. A pplicant's Record Under § 713.04 of Telephone Interview With Examiner 

Applicants acknowledge receipt of the Examiner's Interview Summary for the 
telephone interview of March 10, 2004. In supplement thereto. Applicants respectfully 
submit the following record of the telephone interview of March 10, 2004, under M.P.E.P. § 
713.04. 

The following persons participated in the interview: Examiner Stephen E. Jones and 
Apphcants' attorney Jerry L. Mahurin, Registration Number 34,661. Proposed amendments 
to the claims, using claim 1 as an example, were discussed. Particularly, Applicants' attorney 
proposed adding a limitation to claim 1 such as to indicate that at least one of the plurality of 
diodes is disposed in a shunt configuration. The Examiner indicated agreement that this 



25404802.1 



13 



Application No.: 09/970,351 



Docket No.: 49581/P030US/10104106 



claim amendment distinguishes at least claim 1 over the art of record. However, the 
Examiner indicated that such an amendment would require further searching and/or 
examination. Thus, the above advanced amendments have been presented concurrently with 
filing of a Request for Continued Examination (RCE). 

III. Rejection(s) under 35 U.S.C. S102(b) 

Claims 1-3, 6, 7, 22, 24 and 25 stand rejected under 35 U.S.C. § 102(b) as anticipated 
by the Agilent Reference. Although as pointed out in the amendment filed July 15, 2003 
Applicants believe these claims are allowable over the Agilent Reference^ Applicants have 
amended independent claims 1 and 22 above. Independent claim 1 has been amended above 
to include a limitation that recites "wherein at least one other of said diodes is disposed in a 
shunt configuration." Similarly, claim 22 has been amended to recite that "at least one diode 
of said plurality of diodes is a shunt diode with an anode coupled to said first control signal 
input and wherein an anode of at least one other shunt diode of said plurality of diodes is 
coupled to said second control signal input." Basis for these limitations exists in the 
specification at least on page 9, line 21; page 11, lines 18 and 25; page 12, line 22; page 14, 
line 7; and is shown in FIGURES 2, 2A, 3 and 4. Thus, no new matter has been entered. 

The recited reference does not teach all claimed limitations. 

It is well settled that to anticipate a claim, the reference must teach every element of 
the claim, see M.P.E.P. §2131. Moreover, in order for a prior art reference to be anticipatory 
under 35 U.S.C. § 102 with respect to a claim, "[t]he elements must be arranged as required 
by the claim," see M.P.E.P. § 2131, citing re Bond, 15 U.S.P.Q.2d 1566 (Fed. Cir. 1990). 
Furthermore, in order for a prior art reference to be anticipatory under 35 U.S.C. § 102 with 
respect to a claim, "[t]he identical invention must be shown in as complete detail as is 
contained in the . . . claim," see M.P.E.P. § 2131, citing Richardson v, Suzuki Motor Co., 9 
U.S.P.Q.2d 1913 (Fed. Cir. 1989). Applicants respectfiilly assert that the rejection does not 
satisfy at least these requirements. 

As noted above, independent claim 1 , as amended, recites "wherein at least one other 
of said diodes is disposed in a shunt configuration." Similarly, claim 22, as amended, recites 
"at least one diode of said plurality of diodes is a shunt diode with an anode coupled to said 



25404802.1 



14 



Application No.: 09/970,351 



Docket No.: 49581/P030US/10104106 



first control signal input and wherein an anode of at least one other shunt diode of said 
plurality of diodes is coupled to said second control signal input.". The Agilent Reference 
does not disclose disposing diodes in a shunt configuration, therefore the Agilent Reference 
does not teach the claimed shunt diode limitations now present in claims 1 and 22. 
Therefore, Applicants respectfully assert that independent claims 1 and 22 are patentable over 
the 35 U.S.C. §102 rejection of record. Furthermore, there are great differences between 
these claims and the prior art of record, and a person of ordinary skill in the art considering 
the prior art would not find these differences obvious. 

Claims 2, 3, 6 and 7 ultimately depend from base independent claim 1 and claims 24 
and 25 ultimately depend from base independent claim 22. Thus, each of claims 2, 3, 6, 7, 24 
and 25 inherit all limitations of their respective base claims. Therefore, each of claims 2, 3, 
6, 7, 24 and 25 set forth features and Umitations not recited by the Agilent Reference. Thus, 
Applicants respectfully assert that, at least for the reasons advanced above in answering the 
rejections of independent base claims 1 and 22, claims 2, 3, 6, 7, 24 and 25 are patentable 
over the 35 U.S.C. §102 rejection of record. 

rV. Claims indicated as allowable 

The Final Action indicates that claims 8-15 and 28 contain patentable subject matter. 
Accordingly, claims 8, 13 and 28 have been amended above to place them in independent 
form. Claim 8 retains all of its priginal limitations. Claims 13 and 28 retain limitations 
believed to place these claims in condition for allowance. Therefore, Applicants respectfully 
request an indication of allowance of claims 8, 13 and 28. 

New claims 49-51 include limitations removed fi*om claim 13. Similarly, new claim 
52 includes limitations removed fi:*om claim 28. New claim 53 contains limitations 
corresponding to limitations recited in other dependent claims, such as dependent claim 30, 
but claim 53 depends from now independent claim 28. Whereas, new claims 49-51 depend 
fi-om now independent claim 13, and new claims 52 and 53 depend from now independent 
claim 28, claims 49-53 include all limitations of respective claims 13 and 28. Therefore, each 
of claims 49-53 are patentable. Resultantly, Applicants respectfully request an indication of 
allowance of new claims 49-53. 



25404802.1 



15 



Application No.: 09/970,351 



Docket No.: 49581/P030US/10104106 



V. Conclusion 

In view of the above, each of the presently pending claims in this application is 
believed to be in immediate condition for allowance. Accordingly, the Examiner is 
respectfully requested to pass this application to issue. 

Fees related to the above advanced claim amendments are dealt with in the 



accompanying Transmittal(s). Similarly, the Fee associated with the accompanying RCE are 
dealt with in the accompanying Transmittal(s). Applicant believes no further fee is due with 
this response. However, if an additional fee is due, please charge Deposit Account No. 06- 
2380, under Order No. 49581/P030US/10104106 from which the undersigned is authorized 



The examiner is respectfully requested to call the below listed attorney if he can be of 
assistance in furthering prosecution of the present application. 



to draw. 



Dated: April 13,2004 



Respectfully submitted. 




Jerry L. Mahurin 
Registration No.: 34,661 
FULBRIGHT & JAWORSKI L.L.P. 
2200 Ross Avenue, Suite 2800 
Dallas, Texas 75201-2784 
(214) 855-8386 
(214) 855-8200 (Fax) 
Attomey for Applicant 



\ 



25404802.1